UH comes out on top in judge's ruling on law school dispute

UH wins temporary injunction in legal battle against rival law college

A billboard on U.S. 59 trumpets the "brand new" law school formerly called South Texas College of Law. (Yi-Chin Lee / Houston Chronicle)

Photo: Yi-Chin Lee / Houston Chronicle

A federal judge ruled Friday that South Texas College of Law must stop using its new name - displayed on prominent billboards around town - until it resolves a bitter legal dispute with the University of Houston regents.

U.S. District Judge Keith Ellison granted a temporary injunction in a 42-page ruling that found South Texas's new name, Houston College of Law, had created confusion among consumers and caused a "substantial threat of irreparable injury" to the University of Houston Law Center.

The facts "weigh heavily in favor" of UH prevailing in the case, Ellison said.

He set a hearing Wednesday for lawyers representing the two law schools to determine how to proceed.

Ellison noted in the ruling that South Texas College of Law had wanted to change its name so consumers did not assume it was in the Rio Grande Valley or confuse it with Texas Southern University.

"It must be with a great sense of irony that (d)efendant now attempts to downplay the effects of the same type of affiliation confusion that prompted defendant to spend hundreds of thousands of dollars to rebrand itself," he said.

The order left the South Texas College of Law officials reeling.

"We were stunned that this would be the outcome," Donald J. Guter, dean of the 93-year-old private law school, said Friday. "It's not the opinion we were expecting. We were confident we had the law on our side."

He said late Friday school officials had not had time to process the judge's order, but that administrators, staff and board members would discuss how to proceed before next week's hearing.

Tony Buzbee, a UH Law Center alumnus and the lead attorney for the team representing UH, said he was pleased and gratified by the court's decision.

"The evidence showed overwhelmingly that the name change caused confusion in the marketplace," Buzbee said. "The next step is for South Texas College of Law to remove their billboards, change their website, remove merchandise from stores and change their name in the American Bar Association database. This is a complete victory for the University of Houston and the UH Law Center."

Ellison's ruling upsets the private law school's effort to rebrand itself as a downtown campus, by stating that the name and colors South Texas chose are too similar to the brand UH had already established.

Initial confusion

Zach Wolfe, a Houston litigation attorney who studied the rulings, said the judge noted that students might be confused initially about the two schools.

"Judge Ellison acknowledged that prospective law students are unlikely to be confused about which law school they are selecting at the 'point of sale,' but his reasoning was that prospective students could easily be confused when initially looking into law schools," he said. "That was a key factor showing a likelihood of confusion, which is the key issue in trademark litigation."

South Texas began considering the name change in 2013, after a market study commissioned by the college showed that people were unclear about where the school was located and mixed it up with TSU.

Guter testified in a deposition the college could gain "broader exposure" by being associated or affiliating with UH or Rice University.

South Texas moved to change the name earlier this year after Texas Wesleyan University Law School became affiliated with Texas A&M and bypassed South Texas in the U.S. News rankings.

Five days after "Houston College of Law" announced its new name, UH lawyers filed a trademark infringement suit. Among their concerns were the use of red and white - the colors used by UH - in place of the college's crimson and gold.

Brand identification

South Texas' lawyers argued in pleadings that "Houston" didn't belong to anyone.

"The College has the right to claim Houston not only as its heritage, its cultural touchstone and its home, but also as part of its name," the college argued.

Ellison, however, ruled that UH had spent years establishing its brand and therefore had priority on the marks "University of Houston," "University of Houston Law Center" and "Houston Law," stating that the new college's name was too similar.

He also noted that UH had strong brand identification with the colors red and white.

"There can be no dispute that the cost of a legal education is tremendous, nor can there be much debate regarding the relative sophistication of prospective law students at the point of sale," Ellison said in the ruling. "It is only after their interest in legal education is first piqued that they begin the process of becoming sophisticated. In other words, there exists a period of time in every prospective law student's career where, not only is he unsophisticated, he knows practically nothing about the industry and is particularly susceptible to confusion."

Gabrielle Banks covers federal court for the Houston Chronicle. She has been a criminal justice and legal affairs reporter for nearly two decades, including staff work at the Pittsburgh Post-Gazette and The Los Angeles Times, and freelance work for The New York Times, The Mercury News, Newsday and The Miami Herald. She has a graduate degree in journalism from Columbia University. Before her years as a reporter, she worked as a teacher, social worker and organizer.